Patent decision

BL number

O/272/09

Concerning rights in

GB 0701177.8

Hearing Officer

Dr H L Craven

Decision date

7 September 2009

Person(s) or Company(s) involved

Ian A Ferguson

Provisions discussed

Patents Act 1977 section 15(9) Patents Rules 2007 rules 19, 108

Keywords

Divisional application, Extensions of time

Related Decisions

None

Summary

The applicant requested to further extend the compliance period by two months under rule 108(3) to enable a divisional application to be filed within the period prescribed by rule 19. In support of the request it was argued that the applicant had intended to file a divisional application within the prescribed period but had been prevented from doing so by serious financial difficulties. He had only been in a position to file such an application when his financial situation improved. The Office took the preliminary view that the further extension was not allowable and offered a hearing. The applicant requested a decision on the papers and later filed further arguments and evidence in support of his case.

The Hearing Officer found that, in the circumstances of the case, it was appropriate to apply the well established and judicially approved (in Luk Lamellan und Kupplungsbau GmbH’s Application [1997] RPC 104) criteria that apply to the exercise of discretion to allow an extension to the period for filing a divisional application under rule 108(1). She therefore considered whether the circumstances were exceptional and the applicant had been properly diligent. On the basis of the further evidence filed by the applicant, which was not available to the Office when it reached its preliminary decision, the Hearing Office found that Mr Ferguson was suffering considerable financial difficulties which prevented him from filing a divisional application within the prescribed period. She was therefore satisfied that Mr Ferguson’s financial situation was exceptional. She also found that Mr Ferguson had made reasonable attempts to secure investment to allow him to pay his patent costs and that, on balance, he had intended to obtain protection for the second invention disclosed in the application and had been properly diligent in pursuing this intention.

The request for a further extension was therefore allowed.